DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 25-26, 28-35 ,41 and 44 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Foo et al. (WO-9952632-A1).
Regarding claims 25-26, 30, 32, 34-35, 41 and 44
Foo discloses a process for the hydrocyanation of and isomerization of olefins in the presence of nickel and bidentate phosphorus amide ligands (i.e., catalyst) (abstract).
Foo discloses that the hydrocyanation reaction is carried out by reacting an olefin with HCN (i.e., hydrogen cyanide) in the presence of the catalyst (page 2, lines 14-22).
Foo discloses ligands which read on the limitations of the ligand of the claim, including the nitrogen atom of the P-N linkage forming an aromatic heterocycle group-, and the phosphorous atom having two further oxygen atoms, wherein the oxygen atoms are bonded to aryl groups, and wherein the aryl groups are bonded to each other. (Example 7).
Regarding claim 28
Foo discloses hydrocyanation of 3-pentenenitrile (Table 3).
Regarding claim 29
Foo discloses a process for hydrocyanation of butadiene to produce a nonconjugated acylic nitrile (i.e., monoethynically unsaturated compound or monoalkene nitrile) the isomerization of this nonconjugated acylic nitrile (i.e., isomerization of the double bind), and the hydrocyanation of the monoalkene nitrile, wherein each process is conducted in the presence of a catalyst (page 2, lines 14-22).
Regarding claim 31
Foo discloses that 2-methyl-3-butenenitrile can be isomerized with the catalyst (page 8, lines 22-40).
Regarding claim 33
Foo discloses that the aryl groups bound to the oxygen atom may be xylyl groups (Example 3).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Foo et al. (WO-9952632-A1), as applied to claims 25-26, 28-35,41 and 44 above.
Regarding claim 27
Foo discloses that the diolefinic compound may be butadiene (claim 14).
While Foo does not specify that the butadiene is 1,3-butadiene, there are only two butadiene compounds possible 1,3-butadiene and 1,2-butadiene. Thus using 1,3-butadiene is obvious if not anticipated.
Allowable Subject Matter
Claims 36-40 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 42-43 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
With respect to claims 36-40, none of the prior art fairly teaches the structures claimed in combination with the other limitations of the claim.
With respect to claims 42-43, none of the prior art fairly teaches or suggest the claimed structures.
Response to Arguments
Applicants argue against the 102 rejection.
Applicants argue that Example 7 of Tam lacks two oxygen atoms bonded to the phosphorus atom of the P-N linkage. This is not persuasive and it appears that applicants are referring to Examples 6 or 8.
The remaining arguments have been fully considered but are not persuasive for the same reason(s) given above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES E MCDONOUGH whose telephone number is (571)272-6398. The examiner can normally be reached Mon-Fri 10-10.
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JAMES E. MCDONOUGH
Examiner
Art Unit 1734
/JAMES E MCDONOUGH/Primary Examiner, Art Unit 1734
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